How best to patent idea while working for company?

Question

I have an idea I would like to patent. I have not started working on the idea yet (and I'll swear to that in court). How best to keep my job without losing my intellectual property rights?

The idea is completely independent of my work, however it would be a software patent and I work as a software developer. No proprietary employer information or equipment would be used to develop the idea.

I have signed a non-compete with my employer (I am not in California), but have not signed any documents assigning intellectual property to my employer. I have asked my employer to clarify their policy regarding intellectual property, and they responded with a typical statement that work derived from proprietary knowledge or equipment gained from employment belongs to the company. However I have not signed any document to this effect.

Does anyone know the jurisprudence on this? Is assignment of IP non-existent unless specified in an employment contract, or can it be implied by employment as my employer has said?

Keep in mind my work would be orthogonal to my company's work, but I just want to make sure I should not quit my job before embodying my invention just to be safe.

Answer 1

Are you sure you have not signed away your IP rights? Did you check your employment contract thoroughly? Generally, these days most employment contracts for salaried (and even contract) employees have standard boilerplate language broadly asserting that whatever intellectual property you come up with while you are employed belongs to the employer by default. This typically means even if you get an idea -- for something that has no relation at all with your employer's interests -- in a dream -- while you were on vacation -- on another continent -- they can still lay claim to it.

And if you're a software developer, your primary output in service of your employer is essentially intellectual property, so I would be surprised if your employer did not have that boilerplate in their employment contract. In fact, if your employer's main business happens to depend on software you write, it would be almost negligent if they didn't.

Here's a great answer to a very similar question that identifies the problems in IP ownership of personal or hobby projects/ideas, even if it's done on your own time with your own resources: http://answers.onstartups.com/a/20136

Answer 2

You should get a solid legal answer by an attorney. Show all of your paperwork and any agreements with your employer. I have run into this myself for our clients as CEO of The Mars Rising Network. An attorney has to look at all of this to determine if you are free to move on your own. In your case you are a software developer, I have seen other people that had inventions separate from any projects the company was working on and they were fine to move forward on their own.

Answer 3

This is the Illinois Employee Patent Act:

http://www.ilga.gov/legislation/ilcs/ilcs3.asp?ActID=2238

The relevant passage for you is here:

(1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.